USPTO Appeals Panel Narrows Allergan OTDP Ruling, Proposes New Framework
In-house patent counsel and IP portfolio managers must adjust continuation prosecution and licensing strategies, as the USPTO's precedential decision preserves broad anti-harassment obviousness-type double patenting rejections and limits the scope of the recent Allergan ruling.
The USPTO's precedential Appeals Review Panel (ARP) decision in Ex Parte Baurin narrows the 2024 Federal Circuit Allergan ruling to its specific date-related facts, meaning most patent applicants cannot use Allergan to avoid obviousness-type double patenting (OTDP) rejections. The ARP also affirmed OTDP rejections may be issued based on an anti-harassment rationale even without a patent term extension, and proposed a new framework limiting OTDP analysis to unjustified patent term extensions, though it lacks authority to implement the framework without Federal Circuit guidance. Applicants should evaluate consolidating commercially valuable claims into single patents where rapid grant is a priority, and monitor pending Federal Circuit appeals including In re Ablynx for further clarity on OTDP doctrine.